On December 2, U.S. Immigration and Custom Enforcement's (ICE) Homeland Security Investigations announced in a press release that 706 domain names set up to “dupe” consumers into buying counterfeit goods had been seized by federal officials and international partners ahead of the traditional holiday shopping season.

During the operation, known as Operation In Our Sites, federal officials purchased sport jerseys, DVD sets and a variety of clothing, jewelry and luxury goods from online retailers suspected of selling counterfeit goods. ICE reports that, since the launch of the operation over three years ago, it has resulted in 2,550 seized domain names.

During one operation in July 2012, federal authorities launched a crackdown on 70 websites selling counterfeit merchandise, which were designed to imitate legitimate retailer websites. “The fake sites and the real sites are almost indistinguishable,” John Morton, ICE's then director, told the San Francisco Chronicle. “And the fake sites aren’t offering obvious knockoffs. They are trying to masquerade as the real deal.”

“Working with our international partners on operations like this [Operation In Our Sites] shows the true global impact of IP crime,” said ICE Acting Director John Sandweg in a statement. “Counterfeiters take advantage of the holiday season and sell cheap fakes to unsuspecting consumers everywhere. Consumers need to protect themselves, their families, and their personal financial information from the criminal networks operating these bogus sites.”

Retailers need to protect themselves, too. One solution could be through a proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP provides a legal framework for the resolution of disputes between a domain name registrant and a third party over the abusive registration and use of an Internet domain name in the generic top level domains (e.g., .biz, .com, .info, .mobi, .name, .net and .org). While a proceeding under the UDRP can be used only to cancel, transfer or make changes to a domain name registration, it can be an effective way for businesses to gain control of a domain name associated with an offending website.

To prevail in a UDRP proceeding, a complainant must prove:

the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

the domain name registrant has no rights or legitimate interests in respect of the domain name; and

the domain name has been registered and is being used in bad faith.

The UDRP provides examples of circumstances that will be considered as evidence of bad faith registration and use of a domain name. It also provides examples of a how a registrant can demonstrate rights or legitimate interests in a domain name.

If the above criteria can be met, then there are several advantages to resolving a domain name dispute using the UDRP process. Unlike court proceedings, where timelines can be uncertain, the typical timeframe for a UDRP proceeding is approximately 60 days. In a UDRP proceeding, there are a limited number of filings, and the parties’ contentions are decided on the papers without an in-person hearing. A UDRP proceeding also generally requires the payment of a one-time filing fee, with the exception that further limited fees may be incurred for filing an additional submission. Another advantage is that a UDRP proceeding can be used for resolving a domain name dispute regardless of where the domain name registrant and complainant are located. Therefore, the UDRP process can be used to resolve domain name disputes that are international in scope.

In sum, resolving a dispute regarding the abusive registration and use of an Internet domain name through the UDRP process may be faster and less expensive than addressing the problem through a court proceeding. For businesses seeking to combat copycat websites this holiday season, such as those seized by ICE, filing a proceeding under the UDRP may be an effective approach.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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